To: | Klei Entertainment Inc. (pctrademarks@perkinscoie.com) |
Subject: | U.S. Trademark Application Serial No. 90057349 - WILSON - 112641-4021 |
Sent: | August 28, 2020 05:49:53 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90057349
Mark: WILSON
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Correspondence Address:
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Applicant: Klei Entertainment Inc.
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Reference/Docket No. 112641-4021
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 28, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Registrant owns the mark WILSON with a train design. Applicant has proposed the mark WILSON.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
The marks create a highly similar commercial impression.
Registrant uses the mark for “games, namely, board games, card games, action skill games; toys, namely, model trains and vehicles, accessories for model trains and vehicles, namely, storage cases, toy bridges, toy buildings, toy characters, toy train tracks, toy crossings, toy trees, toy loudspeakers; play-sets comprising model train vehicles and accessories, namely, storage cases, toy bridges, toy buildings, toy characters, toy train tracks, toy loudspeakers, toy crossings and toy trees; toy building blocks; soft sculpture toys, rocking toys in the nature of rocking horses and rocking trains, ride-on toys, ride-on toy trains and vehicles; spinning tops; dolls; dolls clothing; play-tents; puzzles; party favours in the nature of small toys; felt play sets comprising train tracks, crossings, model train vehicles, model cars and trucks, buildings, towns, and country-side; flippers and arm bands in the nature of arm floats for recreational use for swimming; yo yos; bath toys; toy scooters, roller skates, inline roller skates, skate boards; children's toy trolleys; pull-along toys; toys on wheels, namely, toy cars and toy trains; musical toys; snow globes; balloons; wind-up toys; sand pits being playground equipment; christmas tree decorations; self contained computer game equipment, namely, hand-held units for playing video games” in part. Applicant intends to use the mark for “Modeled plastic toy figurines; Stuffed and plush toys.”
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). Applicant’s molded plastic toy figurines encompass the types of toy characters identified in the registration. The attached evidence from www.etsy.com shows that soft sculpture toys are stuffed and plush toys and thus registrant’s “soft sculpture toys” and applicant’s “stuffed and plush toys” encompass the same types of goods. The goods are identical in part and otherwise closely related.
When confronted with identical goods bearing highly similar marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, registration must be refused.
Applicant should note the following additional ground for refusal.
REFUSAL – DUPLICATE APPLICATION
Registration is refused because this application and U.S. Application Serial No. 87337527 appear to be duplicate applications. 37 C.F.R. §2.48; TMEP §703. See the attached application. The USPTO will not issue duplicate registrations. 37 C.F.R. §2.48; TMEP §703. Applicant may respond to this refusal by abandoning one of them.
How to respond. Click to file a response to this nonfinal Office action.
/Kristina Morris/
Kristina Morris
Examining Attorney
Law Office 116
571-272-5895
kristina.morris@uspto.gov (informal queries only)
RESPONSE GUIDANCE